News

ITC Favors Microsoft in Patent Case, Bans Motorola Devices

• By Kurt Mackie
• May 21, 2012

Motorola Mobility Inc. has violated Microsoft's intellectual property, the U.S. International Trade Commission (ITC) ruled on Friday.

The ruling concerns a meeting scheduling software patent. The technology is associated with the use of the Android mobile operating system and is associated with Microsoft ActiveSync technology, according to an announcement issued by a Microsoft spokesperson.

Though Motorola can appeal the decision, the court noted (.PDF) that it has issued an exclusion order that prohibits the import of Motorola mobile products that use the technology.

The court had originally considered Microsoft's contentions about a year-and-a-half ago that nine of its patents were infringed by Motorola. Those contentions were reduced to one charge, with Motorola found to have infringed on a patent for "Generating meeting requests and group scheduling from a mobile device" (Patent No. 6,370,566).

At this point, Motorola Mobility could pay royalties to license the technology from Microsoft or it could remove the technology from its U.S. imports. In any case, the ITC has set a penalty. Motorola has to "post a bond set at a reasonable royalty rate in the amount of $0.33 per device" while the case undergoes ITC "presidential review."

An attorney for Microsoft claimed that the suit was brought in the first place because Motorola had refused to renew a licensing agreement.

"Microsoft sued Motorola in the ITC only after Motorola chose to refuse Microsoft's efforts to renew a patent license for well over a year," said David Howard, corporate vice president and deputy general counsel at Microsoft, in a released statement. "We're pleased the full Commission agreed that Motorola has infringed Microsoft's intellectual property, and we hope that now Motorola will be willing to join the vast majority of Android device makers selling phones in the US by taking a license to our patents."

Microsoft claims that about 70 percent of original equipment manufacturers have signed agreements on using its intellectual property alleged to be used in Android. Motorola is one of the few such manufacturers to have taken the matter to court.

The two companies still have other legal actions pending. An unrelated case in Germany found Microsoft to be the intellectual property offender with its Exchange ActiveSync technology, but that case is getting a second look. The two companies also are fighting over the cost of essential patents royalties in yet another case.

One backdrop to these legal actions is intense competition in the mobile operating systems markets. Microsoft and Apple have both claimed that the leading mobile OS, the Linux-based Android, violates their intellectual property. Google, which fostered Android and gives it to equipment manufacturers royalty free, is currently seeking final regulatory approvals to buy Motorola Mobility. That purchase is designed, in part, to bolster Google's collection of patents for legal defensive purposes.